IP Translator

The Court of Justice handed down its decision in the IP Translator reference yesterday. The case, an expedition to Luxembourg initiated by the Appointed Person who heard the applicant's appeal against refusal by the Registrar of Trade Marks, was contrived to explore the important issue of using class headings in trade mark applications, and whether using the class headings means you have specified all the goods and services in the class - what might be termed a purposive approach - or whether it means you have just bagged those goods or services in the list - the literal approach. The application, filed by CIPA, specified the services set out in the class heading for class 41 - which don't include translation services, though it seems to be common ground that translation services are proper to that class. So, if the class heading automatically includes all the goods in the class, the application is dead in the water because of descriptiveness. Such is the process of working out what the law means. What a quaint idea that it might have been written clearly in the first place.

The problem is exacerbated by two factors, maybe more. First, online application forms (the OHIM one in particular) encourage the use of class headings. OHIM takes the view that class headings include all the goods or services in the Nice Agreement's alphabetical list for that class. Nine national offices do likewise. 17 national offices, by contrast, use the literal approach. (OHIM has a page on its website dedicated to the convergence of class headings.) Second, trade mark owners want the widest possible protection, not necessarily because they want to sue for infringement (though they might bully their way to the desired result) but more to enable them to mount spurious oppositions based on indefensibly wide specifications. Neither factor is desirable, IMHO: both lead to what the Max Planck Institute's largely weak and self-serving review characterised as "cluttering".

The Court begins by telling us what we already know, but of course it always does that:

Directive 2008/95/EC of the European Parliament and of the Council of 22 October 2008 to approximate the laws of the Member States relating to trade marks must be interpreted as meaning that it requires the goods and services for which the protection of the trade mark is sought to be identified by the applicant with sufficient clarity and precision to enable the competent authorities and economic operators, on that basis alone, to determine the extent of the protection conferred by the trade mark. [Emphasis added.]

It goes on to say that the use of class headings is not precluded. Hard to imagine that it might have been, and of course that's not the question. The important thing is what to read into the class headings. The Court adds, of course, "provided that such identification is sufficiently clear and precise".

An applicant for a national trade mark who uses all the general indications of a particular class heading ... to identify the goods or services for which the protection of the trade mark is sought must specify whether its application for registration is intended to cover all the goods or services included in the alphabetical list of that class or only some of those goods or services. If the application concerns only some of those goods or services, the applicant is required to specify which of the goods or services in that class are intended to be covered.

So what do you do if you want to cover all the goods and services in the class? You can't (as I understand it)  use the old formula "all goods in class X", because that is neither clear nor precise. But what is? Or does the judgment mean that we shouldn't be so lazy, that we must set out in so many words what we want protection for? That would be a good thing, even if it led to much longer specifications. And remember (if your memory of these things goes back to pre-1994) that we have the great benefit of a system that regards as infringement something that involves mere similarity between the parties' goods or services (provided, of course, that there is a likelihood of confusion). This contrasts with the literal interpretation of the scope of protection under the 1938 Act. You don't need to sweep up all those goods and services: it's only if you want to make your trade mark as much as possible like copyright that you'll do that, and the system should resist any attempt to do that.

Finally, another gem I have uncovered in my reading on this topic. OHIM's Project Brief on the convergence of class headings says, discussing whether it would be better to wait for the judgment we got yesterday:

... a consensus between all of the IP offices is preferable to reliance on court rulings, which in any case are not expected before middle 2012. It might also not provide the legal certainty and clarity that is required.

Well, it seems that they were right about the legal certainty and clarity that flows from the decision of the court. But in the nature of a reference under Article 267 (Article 177 as was - what sort of inflation rate is that?) that's what you get. But how can a consensus between national offices be better than court rulings? More practical, perhaps, but the supreme authority on the interpretation of EU law is the Court of Justice, and it's rather disconcerting to find another institution disregarding this.